national arbitration forum

 

DECISION

 

Homer TLC, Inc.  v. wang ting wang / wang ting

Claim Number: FA1207001452508

 

PARTIES

Complainant is Homer TLC, Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is wang ting wang / wang ting (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homedecoratorsale.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret)., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2012; the National Arbitration Forum received payment on July 9, 2012.  The Complaint was received in both Chinese and English.

 

On July 15, 2012, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <homedecoratorsale.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name.  Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On July 23, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@homedecoratorsale.com.  Also on July 23, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret)., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

According to Complainant, Complainant is the owner of the HOME DECORATORS and HOME DECORATORS COLLECTION marks.  Complainant provides copies of its trademark registration certificates with the USPTO for the HOME DECORATORS (Reg. No. 3,065,495 registered March 7, 2006) and HOME DECORATORS COLLECTION marks (e.g., Reg. No. 2,065,028 registered May 27, 1997).   Complainant also provides a table containing information regarding its trademark registrations with the SAIC for the HOME DECORATORS COLLECTION mark (e.g., Reg. No. 7,750,071 registered December 14, 2010).   While the Panel notes that Respondent resides or operates in China, the Panel has determined that Complainant’s USPTO trademark registrations are still applicable under Policy ¶ 4(a)(i).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Based on Complainant’s evidence of its trademark registrations with the USPTO and SAIC, the Panel holds Complainant established its rights in the HOME DECORATORS and HOME DECORATORS COLLECTION marks pursuant to Policy ¶ 4(a)(i).  See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant contends that Respondent’s <homedecoratorsale.com> domain name is confusingly similar to Complainant’s HOME DECORATORS mark.  Complainant argues that disputed domain name combines Complainant’s mark with the generic term “sale.”  The Panel notes that the disputed domain name also deletes the letter “s” and the space between terms from Complainant’s HOME DECORATORS mark and contains the generic top-level domain (“gTLD”) “.com.”  The Panel has determined that the addition of a generic term, the removal of a space, and the addition of a gTLD are not sufficient to adequately distinguish the disputed domain name from Complainant’s mark.  See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  Thus, the Panel finds Respondent’s <homedecoratorsale.com> domain name is confusingly similar to Complainant’s HOME DECORATORS mark under Policy ¶ 4(a)(i). 

 

Complainant has proven this element.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant alleges that Respondent is not commonly known by the <homedecoratorsale.com> domain name.  According to Complainant, Respondent and Complainant are not affiliated, connected, or associated in any way and Respondent is not endorsed by Complainant.  Complainant contends that Respondent is not permitted, authorized, or licensed to use Complainant’s HOME DECORATORS and HOME DECORATORS COLLECTION marks.  Complainant argues that the WHOIS information, which lists “wang ting wang / wang ting” as the registrant of the <homedecoratorsale.com> domain name, does not indicate that Respondent is commonly known by the domain name.  In light of Respondent’s failure to contradict these claims, the Panel finds Respondent is not commonly known by the <homedecoratorsale.com> domain name under Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <homedecoratorsale.com> domain name.  Complainant claims that the <homedecoratorsale.com> domain name resolves to a website that hosts an online retail store that sells home décor, furnishings, and accessories. Complainant asserts that it sells similar products on its website and in its stores.  Complainant alleges that Respondent commercially benefits from the sale of these goods.   Based on this evidence, the Panel determines that Respondent’s use of the confusingly similar disputed domain name to directly compete with Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant argues that Respondent’s prior registration of domain names that incorporate well-known, third-party marks is evidence of Respondent’s bad faith registration and use of the <homedecoratorsale.com> domain name.  Complainant provides the Panel with the WHOIS and trademark information for these third-party domain names.  The Panel concludes Respondent’s registration and use of domain names that contain the trademarks of third parties is evidence that Respondent’s registration and use of the <homedecoratorsale.com> domain name, containing Complainant’s mark, are a part of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).

 

Complainant contends that Respondent’s registration and use of the <homedecoratorsale.com> domain name disrupts Complainant’s business.  As noted above, Complainant alleges that Respondent operates a directly competing website at the <homedecoratorsale.com> domain name.  Because the Panel finds that Respondent’s sale of competing products competes and disrupts Complainant’s business, the Panel holds that Respondent registered and uses the <homedecoratorsale.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant also contends that in light of the fame and notoriety of Complainant's HOME DECORATORS and HOME DECORATORS COLLECTION marks, it is inconceivable that Respondent could have registered the <homedecoratorsale.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

           

            Complainant has proven this element.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <homedecoratorsale.com> domain name be transferred fro Respondent to Complainant.

 

 

                                                            Karl V. Fink /s/

 

Honorable Karl V. Fink, (Ret). Panelist

Dated:  August 29, 2012

 

 

 

 

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